Defending Intellectual Property: Be Careful

Someone using your copyrighted or trademarked intellectual property without your consent? Better be careful how you handle it.

That's the advice of David Bell, a partner in the Dallas law office Haynes and Boone LLP. He is the chairman of the firm’s new social media practice and warns that while you shouldn't let the guilty party get away with it, you also don't want to end up with a public relations nightmare on your hands, either.

"When Apple's legal department sent a letter to mobile phone application creator GetJar earlier this month to cease use of the term 'app store,' the result was not what Apple hoped for," Bell said. "GetJar's CEO responded publicly, mocking Apple."

"Cease-and-desist letters generally have the same goal — to persuade someone to stop or remove something immediately — but not all elicit a favorable response," Bell said.

Bell warns that while in the past, letters would fall on the receivers’ desks only, today they spread like wildfire on social media.

"Companies and their legal departments need to be careful when communicating with potential opposing parties, keeping in mind potential backlash. One aggressive letter or email could land a full-page blog post, thousands of re-tweets and bad PR for the sender," he said.

Here are five things Bell advises companies to consider when writing cease-and-desist letters:

Research the individual or company to whom you plan to send a cease-and- desist notice. Are you dealing with a fan? A well-meaning student? A satirist? A competitor or counterfeiter with bad intentions? Think about how your proposed notice will be received, and how it would play out in the press or before a judge. The additional time researching and writing an appropriate letter is always well spent. It can help to avoid a PR fiasco, and in some cases lower the risk that the recipient will file a preemptive lawsuit.

Avoid using form letters or emails for distributing cease-and-desist notices. Personalize the letters to fit the situation and remember your company and customer’s voice. Use corporate messaging and avoid coming across as a trademark bully. Use a tone in the notice that is appropriate to the situation. It should parallel the company’s level of concern, speak appropriately to the person who will receive the notice, and accurately reflect the company’s own public image and values.

Polite requests often are often more effective than aggressive cease-and-desist notices. If the situation involves truly abhorrent behavior by an infringer, however, then strongly consider having a letter sent by the company’s outside counsel. Among other advantages to doing so, this allows the company to distance itself somewhat from any harsh tone in the cease-and-desist notice.

Keep in mind that a cease-and-desist notice is almost never confidential or privileged. Even if you label the notice “confidential,” in the freewheeling world of social media it is likely to end up on the recipient’s blog or website, or in the news.

Before sending out cease-and-desist letters, companies should evaluate the tone and language, weigh the value of their business public relations against business risks and determine legal needs before taking action to protect their brands.